Ex Parte Lange

Board of Patent Appeals and Interferences

Apr 27, 2010

10741678 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BETH A. LANGE
____________

Appeal 2009-005918
Application 10/741,678
Technology Center 3700
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Decided: April 27, 2010
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005918
Application 10/741,678

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STATEMENT OF THE CASE
Beth A. Lange (Appellant) originally appealed under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 15, 23, 28, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Ehrlich (US 4,221,221,
issued Sep. 9, 1980) and Gallo (US 6,622,856 B2, issued Sep. 23, 2003) and
claims 20-22 under 35 U.S.C. § 103(a) as being unpatentable over Ehrlich,
Gallo, and Moore (US 6,405,867 B1, issued Jun. 18, 2002). After Appellant
implicitly withdrew claims 20-22 from the appeal (see App. Br. 2), the
Examiner canceled claims 20-22 (see Office communication mailed Dec. 18,
2008). Accordingly, this appeal involves only claims 15, 23, 28, and 29.
Claims 2-5, 7-14, 18, 19, and 24-26, the only other claims pending in the
application, have been withdrawn from consideration. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to absorbent articles pre-
packaged with sunscreen. See Spec. 1, para. 1.
Claim 29, reproduced below, is representative of the claimed subject
matter.
29. A pre-packaged absorbent article and sun protection
accessories arrangement, said pre-packaged arrangement
comprising:
an absorbent article for personal wear; and a sunscreen
carrier containing a sunscreen composition, the sunscreen
carrier being releasably adhered directly to the absorbent article
for distribution together as a single unit.

Appeal 2009-005918
Application 10/741,678

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SUMMARY OF DECISION
We AFFIRM.

ISSUE
The issue presented in this appeal is whether the combined teachings
of Ehrlich and Gallo render obvious a sunscreen carrier containing a
sunscreen composition releasably adhered to an absorbent article, such as the
utility diaper of Ehrlich.

FACTS PERTINENT TO THE ISSUE
1. Ehrlich describes a utility diaper structure 12 including a diaper 14 (an
absorbent article for personal wear), having a plurality of container
assemblies 16 releasably adhered thereon to hold baby maintenance
items. Col. 1, ll. 44-47, col. 2, ll. 16-19, 24-27, 42-45, 53-56, 64-66;
fig. 1.
2. Although Ehrlich illustrates three container assemblies 16 containing
powder, oil, and a towel, Ehrlich teaches that more or fewer container
assemblies may be used. Col. 3, ll. 17-20. In other words, Ehrlich
explicitly contemplates inclusion of other baby maintenance items in
addition to or in place of the specifically illustrated powder, oil, and
towel containers.
3. Ehrlich teaches that attachment of the baby maintenance items to a
diaper is especially advantageous for travel, so that the needed
maintenance items will always be available. Col. 3, ll. 29-31.
4. Ehrlich does not specifically disclose adhering a sunscreen container
to the diaper.
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5. Gallo discloses keeping a plurality of products used for caring for
children, and infants in particular, together in a kit. Col. 1, l. 63 to
col. 2, l. 3. Diapers, wipes, and sunscreen are among the products
disclosed by Gallo for inclusion in the kit. Col. 3, ll. 37-40, col. 4, ll.
10-12, and col. 5, ll. 20 and 26.
6. Appellant admits that the potentially harmful effects of overexposure
to the sun were known at the time of Appellant’s invention, and that,
consequently, it has become increasingly important for caregivers to
take well known sun protection accessories, such as sunscreen, along
for outdoor activities for use in protecting children from the sun.
Spec. 1, para. 3.

DISCUSSION
Appellant does not present any separate arguments for the
patentability of the dependent claims apart from independent claim 29. See
App. Br. 9. Thus, dependent claims 15, 23, and 28 stand or fall with claim
29. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Ehrlich discloses releasably adhering products used for baby
maintenance, that is, caring for babies, to a diaper to form a utility diaper
structure. Fact 1. While Ehrlich illustrates three container assemblies 16
containing powder, oil, and a towel, Ehrlich explicitly contemplates
inclusion of other baby maintenance items in addition to or in place of the
specifically illustrated powder, oil, and towel containers. Fact 2.
Accordingly, any notion that Ehrlich’s baby maintenance items are limited
to diaper changing accessories (see App. Br. 5) is not commensurate with
the scope of Ehrlich’s teachings.
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Application 10/741,678

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As evidenced by Gallo, it was known in the art at the time of
Appellant’s invention to assemble a plurality of products, including diapers,
wipes, and sunscreen, for caring for children, and particularly infants
(babies), together in a kit. Fact 5. The teachings of Gallo, as well as the
admission by Appellant that sunscreen was a well known sun protection
accessory for use in protecting children from the sun during outdoor
activities (Fact 6), establish that sunscreen was a well known baby
maintenance product at the time of Appellant’s invention.
Thus, the Examiner correctly concluded that it would have been
obvious to include a sunscreen container containing a sunscreen composition
as one of the baby maintenance items releasably adhered to Ehrlich’s utility
diaper. See Ans. 4. The modification proposed by the Examiner is nothing
more than the predictable use of prior art elements according to their
established functions. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (an improvement that is nothing more than the predictable use of
prior art elements according to their established functions is likely to be
obvious). In particular, a person of ordinary skill in the art would have
appreciated that it would have been advantageous to include sunscreen, a
well-known accessory for the care/protection of babies for outdoor activities,
on the utility diaper of Ehrlich, so that the sunscreen would be available
when needed. See Fact 3.
Appellant argues that one skilled in the art would not be motivated by
Gallo to releasably secure sunscreen directly to an absorbent article because
Gallo “fail[s] to recognize the importance of such a securement serving as an
automatic reminder to the caregiver, upon changing the absorbent article, to
apply sunscreen to the child even though the sunscreen is otherwise wholly
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Application 10/741,678

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unrelated to the absorbent article and its changing process.” App. Br. 8.
This argument is unconvincing, because it attacks the teachings of Gallo in
isolation, rather than in combination with Ehrlich, as applied in the rejection.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures). Moreover, the Supreme Court has stated that a rigid insistence
on teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness. KSR, 550 U.S. at 419. Furthermore, in
determining whether the subject matter of a claim is obvious, “neither the
particular motivation nor the avowed purpose of the [applicant] controls.
What matters is the objective reach of the claim.” Id. If the claim extends to
what is obvious, it is unpatentable under § 103. Id. For the reasons
discussed above, the Examiner’s articulated reason for making the
modification, namely, “to provide added protection utility to the assembly”
(Ans. 4), has rational underpinning.

CONCLUSION
The combined teachings of Ehrlich and Gallo render obvious a
sunscreen carrier containing a sunscreen composition releasably adhered to
an absorbent article, such as the utility diaper of Ehrlich. Thus, we sustain
the rejection of independent claim 29 and dependent claims 15, 23, and 28,
which fall therewith, as being unpatentable over Ehrlich and Gallo.

Appeal 2009-005918
Application 10/741,678

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DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

mls

CHRISTOPHER M. GOFF (27839)
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